The Internet makes intellectual property infringement all too easy. Trademark and copyright laws intersect with the Web in ways you might not expect. Evoke Law can assist you with developing a domain name acquisition strategy, gTLD blocking and enforcement, social media, and other related Internet issues.
- Acquisition: Domain name recovery to secure already registered domains
- Enforcement: Filing and prosecuting administrative proceedings, namely, UDRP and URS, to address domain name disputes
- Social Media: Counseling on the intersection of trademark and copyright law on social media
- Keywords: Advise on issues related to registering or challenging Internet keywords
- gTLDs: Advising on the new range of generic top-level domains, Trademark Clearinghouse protection, and blocking programs
- Internet Policies: Draft and advise on terms of service, privacy policies, and DMCA takedown procedures
Invasion of the .NOTCOMs: Generic Top Level Domains (gTLDs)
A recent expansion of Top Level Domains from the familiar .com, .edu, .org, .info, .biz, etc. has opened up a host of new gTLds that include commercial categories of broad general interest, e.g., .play, .dog, .career, .camera, .health, .fishing, .wedding, .clothing, .gay, .yachts.
Some of the new gTLDs are familiar brands: .apple, .delmonte, .samsclub, .fiat, .showtime, .mcd &.mcdonalds, .aaa, .chase, .epson, .godaddy.
Many new gTLDs define themselves by geography: .helsinki, .tokyo, .paris, .broadway, .swiss, .budapest, .berlin, .africa, .melbourne, .nyc.
And, of course, there are a slew of new gTLDs expressly for Internet technologies: .cloud, .app, .web, .site, .blog, .chat, .digital, .mobile, .secure, .online.
The new gTLDs create new opportunities for online branding and have the potential to drive consumer traffic in new directions. Some believe that the new .DOT portals may facilitate new search paradigms on the Internet.
For example, when .camera launches, will the search algorithm on popular Internet browsers be changed to look at the content on the domain names ending with .camera? Or might one of the popular search engines create a new marketing scheme for the owners of the new gTLDs so that their listings are highlighted in the search results? But, with new avenues for domain name registration, it has become increasingly harder for trademark owners to defend against infringement. Fortunately, there are ways to monitor registrations of new domains in the new gTLDs. Keep in mind an efficient resolution may depend on you learning about a potential infringement sooner rather than later.
Registering your marks with the TMCH comes with significant advantages.
- Trademark ClearingHouse (TMCH): If you register a mark with the Trademark ClearingHouse, a global repository of registered marks, for a period of at least 90 days after the launch of a new gTLD, trademark owners who register their marks with the TMCH will receive notifications of anyone who tries to register a domain name containing an identical match to their trademark. The party attempting to register the domain name will also automatically receive a notice of the trademark owner’s prior rights. If the party proceeds with registration of the domain name, the trademark owner receives another notification and can then take the appropriate action whether it be a UDRP, URS, or court proceeding.Additionally, trademark owners who have registered their marks with the TMCH can register their brands as domains in the new Top Level Domains in the Sunrise Period, before the gTLD is open to the public. For example, 30 days before the gTLD for .computer becomes available, Microsoft would be able to apply to register the domain name “Microsoft.computer” before the .computer gTLD was made available to the public—provided it registered its MICROSOFT trademark with the TMCH.
Owners of registered marks in the TMCH have another optional mechanism to prevent infringement, by registering their marks with the Domains Protected Marks Lists (DPML).
DPMLs are currently maintained by the following registries: Donuts, Rightside, and Mind+Machines. The DPML protects mark holders from cybersquatting by blocking the mark from registration over all the gTLDs owned by a specific registry. A domain blocked by the DPML may not be used for a website URL, email address, or any other type of domain-related functionality.
- Watch Services: The TMCH matching system is rudimentary and will not capture variations of your registered mark. To be notified of something other than an identical match, it would be prudent to subscribe to a cost-effective Domain Name watch service, which monitors domain applications and issues a notice when someone registers a domain similar to your mark. While everyone doesn’t necessarily register their trademarks, almost anyone who may be starting a business will (or launching a new product may) registers a domain name encompassing their new mark. A Domain Name watch can effectively notify you of a common law adoption of a given mark.
- Enforcement: What can you do when someone registers your mark as a domain? There are several ways to approach a domain holder: (1) Negotiating the acquisition of the domain at issue may be possible; (2) Initiating an administrative proceedings may allow a mark owner to recover an infringing domain; or (3) Filing a lawsuit under the AntiCybersquatting Consumer Protection Act (ACPA) may also be an option.
Administrative Proceedings to Obtain an Infringing Doman Name
Uniform Domain Name Dispute Resolution Policy (UDRP)
To successfully challenge a domain registrations in any gTLD, the mark holder must establish three elements: (1) the domain name is identical or confusingly similar to a mark in which the mark holder has rights; (2) the registrant does not have any rights or legitimate interests in the domain name; and (3) the registrant registered and is using domain name in “bad faith.” If a UDRP proceeding succeeds, the domain name may be cancelled or transferred to the Complainant.
Uniform Rapid Suspension System (URS)
For second-level registrations in the new gTLDs, there is an alternative proceeding, modeled after UDRP, but with key differences. A URS proceeding can be quicker and less expensive, but the mark holder must provide evidence at the heightened “clear and convincing” standard, and the only remedy for successful parties is suspension of the domain at issue rather than transfer.